The ubiquitous availability of the internet and increasing acceptance of e-commerce has lowered the barriers to international trading. Even small to medium sized businesses can have global reach. If a business is considering selling goods and services globally it is important to consider strategies for protecting the brand overseas and to minimise the risk of exposure to claims for trade mark infringement.
This article provides an overview of international trade mark laws and outlines some of the key issues that should be considered when protecting a brand on a global scale.
1. Overview of International Trade Mark Law
Trade mark rights are territorial in nature and historically each country has developed its own laws relating to what can be protected as a trade mark, how trade marks are protected and the administrative steps required to register a trade mark. Although each country continues to operate its own system of trade mark protection, a range of international treaties have resulted in increasing harmonisation of trade mark laws and the related administrative processes.
Three key international treaties are the Paris Convention for the Protection of Industrial Property 1983 ("Paris Convention"), the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of Registration of Marks (1957) ("Nice Agreement") and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) ("Madrid Protocol").
The Paris Convention is concerned with the protection of various forms of intellectual property, including trade marks, and introduces principles which help facilitate international trade mark protection.
Article 2 contains the principle of national treatment, which requires each member state to afford the same protection to foreign trade mark owners as is provided to its own nationals.
Article 4 provides a right of priority to trade marks that are filed within 6 months of an application in another member country. For example if a trade mark owner applies for a trade mark in Australia they have 6 months to apply in other member countries and receive the same priority date as the Australian application. This can be used to allow trade mark owners to spread the cost of multiple registrations over a longer period or to finalise decisions about which countries are strategically important, while still retaining the benefit of an early priority.
Article 6 however provides that the conditions of filing and registration of trade marks are determined by the domestic legislation of each country. This means that a successful registration in one country does not guarantee that the mark will be registrable in other countries.
The Nice Agreement establishes a classification system of goods and services for which trade marks may be registered. There are currently 34 classes of goods and 11 classes of services. In addition, an alphabetical list of some 11,500 items is maintained and periodically updated to take into account new goods and services.
Under the Madrid Protocol a person who has filed an application or owns a registration in a member country ("Basic Trade Mark") may file a single application at the International Bureau of the World Intellectual Property Organisation designating any number of other member countries to which the application is to extend. In Australia, applications are made through IP Australia. There are currently 83 member states, although some of the notable exceptions are New Zealand and Canada.
The applications are subject to the domestic laws of each designated member country, and protection will not be afforded in a particular member country until it has undergone the relevant examination process in that member country. Again, this means that a successful registration of the Basic Trade Mark in the country of origin, or in one member country, does not guarantee that it will be registered in other member countries.
International applications under the Madrid Protocol are dependent on the validity of the Basic Trade Mark for an initial 5 year period. All the trade mark registrations in the designated countries are vulnerable if the Basic Trade Mark is not registered, for example due to a successful opposition, or if it is removed for non-use. In that case, an international application may be transformed into an individual country application within 3 months of the failure to register, or removal of, the Basic Trade Mark to enjoy its original priority.
2. Tips for International Registrations
Formulating an international strategy and careful selection of a trade mark is important for taking advantage of international treaties and maximising the chance of trouble-free international trade applications.
Choosing a Trade Mark
When developing a global brand, choosing a trade mark that is capable of distinguishing the product is essential. Most countries will not register a trade mark if it is descriptive of the type or quality of the goods or services unless the mark has gained a reputation that makes it distinctive. While use of the trade mark in Australia can result in a descriptive trade mark being registrable in Australia, the reputation of the Base Trade Mark in other countries may not be sufficient and make international registration difficult.
Increasing the number of countries where trade mark applications are made also increases the risk that an identical or deceptively similar trade mark will have already been registered or established a reputation in one or more of the target countries. It is therefore advisable to obtain early clearance searches for each country where a trade mark application will be made. This is especially critical when significant expense is likely to be incurred designing and producing labelling, packaging or marketing materials.
Choosing Goods and Services
Specifying goods and services for registration in multiple countries is somewhat simplified by the Nice Agreement which provides a list of standardised classifications and descriptions. .
However, many countries consider some of the descriptions on the Nice Agreement alphabetical list to be too vague and the goods and services may need to be described with more specificity. For example, "procurement services" is accepted in Australia, but the US requires more detail about the type of procurement services being provided.
Descriptions may also need to be translated into other languages, so non-specialist descriptions that are understandable by those unfamiliar with the particular industry should be used where possible.
Where should a trade mark be registered?
A trade mark should be registered in each country where the corresponding goods or services are sold, or where there is a genuine intention to sell the goods or services.
Regional applications may be possible as an alternative to registering a trade mark in individual countries. For example, a European Community Trade Mark ("CTM") provides protection in all member states of the European Union. A CTM is enforceable in all member states, although a successful objection against a CTM application in one state can defeat the entire application.
Failure to register a trade mark in a country where it is used can result in increased difficulty protecting the mark against infringers. Although many countries, like Australia, have avenues available to protect a trade mark based on the reputation of the mark, if the mark has not been used for long in that country and has not built a significant reputation it can be vulnerable.
It may also be advisable to register a trade mark in a country if goods are being manufactured for export to another country, even if there is no intention to sell the goods in the country of manufacture. For example, in China, branding goods intended for export during the manufacturing process is considered to be use of the trade mark, and could infringe a mark that was registered by another party.
When should an international application be made?
To rely on the priority of an Australian application under the Paris Convention overseas applications must be made within 6 months of the Australian filing date.
Prompt registration is particularly important in countries that give priority on a "first-to-file" basis. Australia is a "first-to-use" country and recognises superior rights of the first to use a trade mark. In "first-to-file" countries a person who has been using an unregistered trade mark may find that they have very few rights against someone who later registers the same or a similar trade mark unless the mark has become particularly famous. "First-to-file" countries include Europe and many Asian countries such as China and Japan.
The Madrid Protocol, described above, provides a method for extending the application of an Australian trade mark to multiple countries via a single application. This can be cost effective when applying to several countries at the one time, although the official administrative costs may make it less cost effective than a direct application if the mark is being registered in only one or two countries.
Also, as international applications made under the Madrid Protocol are dependent on the validity of the Basic Trade Mark registration for 5 years, a direct registration may be a better option if the original trade mark is particularly vulnerable to opposition or removal.
Direct applications will be necessary where there is no basic application on which to base a Madrid Protocol application, or where the country is not a party to the Madrid Protocol.
Maintenance of trade marks
Once a mark is registered action may be required to maintain its registration and effectiveness.
While some countries allow a trade mark to be registered if there is a intention to use a trade mark, a mark will be vulnerable to removal from the register if it is not used within a certain time-frame or is subsequently not used for a certain period (often 3 to 5 years).
Some countries require that a trade mark's registration be notified, for example by using an (r) mark, to achieve maximum protection. Failure to do so may affect the validity of the registration or the damages available against an infringer.
Countries may also require that a trade mark owner monitors other's use of the mark and take action against non-trivial infringements. Failure to do so can lead to loss of rights in the mark.
Action may also be required to prevent similar marks being registered. While the Australian trade mark office will refuse to accept a trade mark that is identical to or deceptively similar to a previously registered trade mark (subject to exceptions), some jurisdictions, including the United Kingdom, will not refuse a mark due to the presence of an existing mark unless the owner of the previous trade mark opposes the later registration.
As a minimum, a trade mark owner should periodically search the internet and monitor the market place for potential infringements. Trade mark watch services are available which warn of potentially conflicting trademark applications on the relevant trade mark registers so that appropriate action can be taken.
Some notes on trade mark use on the internet
Most jurisdictions require that a registered trade mark is used in the country in which it is registered to maintain protection.
At first, simply uploading a trade mark onto a web-site may seem a straight forward way of establishing the requisite use in each country. However, while technically it is true that a trade mark on the internet can be accessed world-wide, simply uploading a trade mark onto a web-site, or even making a general offer to sell the trade marked goods on the internet to the world at large, may not be sufficient to establish use in each country for the purpose of maintaining a trade mark registration.
Use of a trade mark was considered in Australia in relation to case for trade mark infringement. Justice Merkel stated:
What constitutes use of a trade mark on the internet varies from country to country, however most jurisdictions require something more than the trade mark being present on a web-site that is accessible from that jurisdiction. Often evidence of sales of goods or targeting of customers in the jurisdiction is required.
While international treaties have aided the harmonisation of trade mark law and procedure, trade marks remain territorial and subject to domestic laws which often differ from country to country. To efficiently establish and protect an international brand care should be taken in choosing a trade mark and planning a strategy for registering it in target markets. This strategy should be incorporated into the current and future development plans of the business, rather than being a last minute consideration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.